IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
Civil Action No. 2:13cv379
JURY TRIAL DEMANDED
COMPLAINT FOR PATENT INFRINGEMENT
Plaintiff Black Hills Media, LLC (“Black Hills” or “Plaintiff”) in support of its
Complaint against Samsung Electronics Co. Ltd., Samsung Electronics America, Inc. and
Samsung Telecommunications America, LLC (collectively, “Samsung” or “Defendants”) states
and alleges as follows:
THE PARTIES
1. Plaintiff, Black Hills, is a privately held Delaware limited liability company with
a principal place of business at 1000 N. West St., Wilmington, Delaware and business offices at
7011 Fayetteville Road, Durham, North Carolina.
2. Defendants, Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.
and Samsung Telecommunications America, LLC are an interrelated group of companies.
3. Samsung Electronics Co. Ltd. (“Samsung Electronics”) is a foreign corporation
having a principal place of business at 1320-10, Seocho 2-dong Seocho-gu, Seoul, South Korea.
BLACK HILLS MEDIA, LLC
Plaintiff,
v.
SAMSUNG ELECTRONICS CO. LTD.,
SAMSUNG ELECTRONICS AMERICA, INC. and
SAMSUNG TELECOMMUNICATIONS
AMERICA, LLC
Defendants.
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4. Samsung Electronics America, Inc. (“Samsung America”) is a wholly owned
subsidiary of Samsung Electronics. It is a New York corporation with a principal place of
business at 105 Challenger Road, Ridgefield Park, New Jersey.
5. Samsung Telecommunications America, LLC (“Samsung Telecommunications”)
is a subsidiary of Samsung America with an ultimate parent of Samsung Electronics. It is a
Delaware limited liability company with a principal place of business located within this
judicial district at 1301 East Lookout Drive, Richardson, Texas.
JURISDICTION AND VENUE
6. This is an action for patent infringement under the patent laws of the United
States, 35 U.S.C. §§271 and 281-285. This Court has subject matter jurisdiction pursuant to 28
U.S.C. §1331 and 1338(a).
7. Personal jurisdiction over Defendants exists at least because Defendants have
committed and continue to commit acts of patent infringement in this district as alleged in this
Complaint and Defendant, Samsung Telecommunications resides in this state.
8. Venue is proper under 28 U.S.C. §§1391(b), 1391(c) and 1400(b).
BACKGROUND
9. Black Hills, through assignment, owns all of the rights and interests in the United
States Patent Nos. 8,028,323 (“the '323 Patent”); 8,214,873 (“the '873 Patent”); 8,230,099 (“the
'099 Patent”); 8,045,952 (“the '952 Patent”); 8,050,652 (“the '652 Patent”); 7,835,689 (“the ‘689
Patent”); 7,917,082 (“the ‘082 Patent”); 6,618,593 (“the '593 Patent”); and 6,108,686 (“the ‘686
Patent”) (collectively, the “Patents in Suit.”).
10. The ‘323 Patent is entitled “Method and System for Employing a First Device to
Direct a Networked Audio Device to Obtain a Media Item.” The '323 patent names Martin Weel
as the inventor and was issued on September 27, 2011, after a full and fair examination. A true
and accurate copy of the '323 patent is attached as Exhibit A.
11. The '873 Patent is entitled “Method, System and Computer-Readable Medium for
Employing a First Device to Direct a Networked Audio Device to Render a Playlist” The '873
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patent names Martin Weel as the inventor and was issued on July 3, 2012, after a full and fair
examination. A true and accurate copy of the ‘873 patent is attached as Exhibit B.
12. The '099 Patent is entitled “System and Method for Sharing Playlists.” The '099
patent names Martin Weel as the inventor and was issued on July 24, 2012, after a full and fair
examination. A true and accurate copy of the ‘099 Patent is attached as Exhibit C.
13. The '952 Patent is entitled “Method and Device for Obtaining Playlist Content
Over a Network.” The '952 Patent names Safi Qureshey and Daniel D. Sheppard as inventors
and was issued on October 25, 2011, after a full and fair examination. A true and accurate copy
of the ‘952 Patent is attached as Exhibit D.
14. The '652 Patent is entitled “Method and Device for an Internet Radio Capable of
Obtaining Playlist Content from a Content Server.” The '652 Patent names Safi Qureshey and
Daniel D. Sheppard as inventors and was issued on November 1, 2011, after a full and fair
examination. A true and accurate copy of the ‘652 Patent is attached as Exhibit E.
15. The ‘689 Patent is entitled “Distribution of Music between Members of a Cluster
of Mobile Audio Devices and a Wide Area Network.” The ‘689 Patent names David A.
Goldberg, Martha Goldberg, Miriam Goldberg, and Benjamin Goldberg as the inventors and
was issued on November 16, 2010, after a full and fair examination. A true and accurate copy
of the ‘689 Patent is attached as Exhibit F.
16. The ‘082 Patent is entitled “Method and Apparatus for Creating and Managing
Clusters of Mobile Audio Devices.” The ‘082 Patent names David Goldberg, Benjamin
Goldberg, Martha Goldberg, Miriam Goldberg, and Neil Simon as the inventors and was issued
on March 29, 2011, after a full and fair examination. A true and accurate copy of the ‘082
Patent is attached as Exhibit G.
17. The ‘593 Patent is entitled “Location Dependent User Matching System.” The
'593 patent names Charles Drutman, Darlene Drutman, Andrew Egendorf, Norton Greenfeld,
and Eugene Pettinelli as the inventors and was issued on September 9, 2003, after a full and fair
examination. A true and accurate copy of the ‘593 Patent is attached as Exhibit H.
18. The ‘686 Patent is entitled “Agent-Based On-line Information Retrieval and
Viewing System.” The ‘686 Patent names Henry R. Williams, Jr. as the inventor and was
issued on August 22, 2000, after a full and fair examination. A true and accurate copy of the
‘686 Patent is attached as Exhibit I.
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19. Upon information and belief, Defendants make, use, offer to sell, sell and import
into the United States, including within the Eastern District of Texas, digital media devices
including without limitation digital televisions, Blu-ray disc players, home theater systems,
tablets and mobile telephones (“Accused Products”) that infringe one or more claims of the
Patents in Suit.
COUNT I
INFRINGEMENT OF THE ‘323 PATENT
20. Plaintiff incorporates each of the preceding paragraphs as if fully set forth herein.
21. Defendants are directly and/or indirectly infringing one or more of the claims of
the ‘323 Patent literally, and/or under the doctrine of equivalents, by importing into the United
States and/or making, using, selling, or offering for sale in the United States, including the
Eastern District of Texas, the Accused Products.
22. Exemplary infringing products for this patent include mobile phones, tablets,
televisions, Blu-Ray players, and home theater systems compatible with AllShare, DIAL, or
other media sharing protocols. For example, these products include the Galaxy S IV, Galaxy S
III, Galaxy Note II, Galaxy Tab 2 10.1, BD-F7500, BDF5900, BD-F5100, HT-E6730W/ZA,
HT-E6500W/ZA, LN55C750R2FXZA, UN55F8000BFXZA, UN55F6300AFXZA, and
PN60F8500AF and other products with similar functionality.
23. As a developer, designer, maker and distributor of these products, as well as a
holder of a significant patent portfolio in this field, Defendants knew or should have known that
their products infringed on one or more claims of the ‘323 Patent. Should Defendants contend
that they did not have prior notice of these patents, Defendants have notification of their
infringement of the ‘323 Patent by the filing and service of this complaint.
24. Defendants’ inducement of infringement of the ‘323 Patent includes, but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘323 Patent, including sharing media from a playlist across devices using
AllShare, DIAL, and/or other similar media sharing protocols. Defendants’ products are
imported, marketed, offered for sale sold and/or used in the United States. Defendants
vigorously promote, market, advertise and ship the Accused Products along with on screen
display menus, directions, demonstrations, guides, manuals, training for use, user prompts,
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product and user manuals and other materials that are specifically intended to direct, cause,
urge, encourage and facilitate others to perform acts of infringement of the ‘323 patent. These
actions by Defendants are intended specifically to cause (and have caused) users, including end
users in the Eastern District of Texas, to directly infringe the relevant claims.
25. Examples of instructions to cause infringement can be found at the following web
links and documents, which are on information and belief maintained by Defendant:
- http://www.samsung.com/us/video/blu-ray-dvd/BD-D5300/ZA-specs#
- http://www.samsung.com/us/video/blu-ray-dvd/BD-E6500/ZA-specs#
- http://www.samsung.com/us/news/newsRead.do?news_seq=20078
- http://www.samsung.com/us/video/tvs/UN50ES6150FXZA-specs#
- http://www.samsung.com/us/video/home-theater/HT-E6500W/ZA-specs#
- http://support-us.samsung.com/spsn/search_result.jsp?keywords=allshare
- http://www.youtube.com/watch?v=lPLs4KvnyQ0
- http://www.youtube.com/watch?v=9EaYojtXFaU&noredirect=1
26. Defendants knew or should have known that its encouragement and instructions
to third parties would result in infringement of the ‘323 Patent by those third parties, including
end users in the Eastern District of Texas. Defendants are thus liable for inducing infringement
of the ‘323 Patent pursuant to 35 U.S.C. §271(b).
27. This infringement by Defendants of the ‘323 Patent has injured Black Hills and
will cause irreparable injury and damage in the future unless Defendants are enjoined from
infringing the ‘323 Patent.
28. Black Hills reserves its rights to take discovery as to the extent of Defendants’
pre-suit knowledge of the ‘323 Patent and to allege pre-suit willfulness. Defendants’ continued
infringement of the ‘323 Patent is willful infringement.
COUNT II
INFRINGEMENT OF THE ‘873 PATENT
29. Plaintiff incorporates by reference each of the preceding paragraphs as if set forth
fully herein.
30. Defendants are directly and/or indirectly infringing one or more of the claims of
the ‘873 Patent literally, or under the doctrine of equivalents, by importing into the United
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States and/or making, using, selling, or offering for sale in the United States, including the
Eastern District of Texas, the Accused Products.
31. Exemplary infringing products for this patent include mobile phones, tablets,
televisions, Blu-Ray players, and home theater systems compatible with AllShare, DIAL, or
other media sharing protocols. For example, these products include the Galaxy S IV, Galaxy S
III, Galaxy Note II, Galaxy Tab 2 10.1, BD-F7500, BDF5900, BD-F5100, HT-E6730W/ZA,
HT-E6500W/ZA, LN55C750R2FXZA, UN55F8000BFXZA, UN55F6300AFXZA, and
PN60F8500AF and other products with similar functionality.
32. The ‘873 Patent is a continuation of U.S. Patent 8,028,038 (the ‘038 Patent).
Prior to this suit, the U.S.P.T.O. expressly put Defendants’ patent attorneys on notice of the
‘038 Patent. On information and belief, Defendants also learned of the ‘873 Patent.
33. In addition, as a developer, designer, maker and distributor of these products, as
well as a holder of a significant patent portfolio in this field, Defendants knew or should have
known that their products infringed on one or more claims of the ‘873 Patent. Should
Defendants contend that they did not have prior notice of these patents, Defendants have
notification of their infringement of the ‘873 Patent by the filing and service of this complaint.
34. Defendants’ inducement of infringement of the ‘873 Patent includes, but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘873 Patent, including sharing media from a playlist across devices using
AllShare, DIAL, and/or other similar media sharing protocols. Defendants’ products are
imported, marketed, used, offered for sale and/or sold in the United States. Defendants
vigorously promote, market, advertise and ship the Accused Products along with on screen
display menus, directions, demonstrations, guides, manuals, training for use, user prompts,
product and user manuals and other materials that are specifically intended to direct, cause,
urge, encourage and facilitate others to perform acts of infringement of the ‘873 patent. These
actions by Defendants are intended specifically to cause users, including end users in the
Eastern District of Texas, to directly infringe the relevant claims.
35. Examples of instructions to cause infringement can be found at the following web
links and documents, which are on information and belief maintained by Defendant:
- http://www.samsung.com/us/video/blu-ray-dvd/BD-D5300/ZA-specs#
- http://www.samsung.com/us/video/blu-ray-dvd/BD-E6500/ZA-specs#
7
- http://www.samsung.com/us/news/newsRead.do?news_seq=20078\
- http://www.samsung.com/us/video/tvs/UN50ES6150FXZA-specs#\
- http://www.samsung.com/us/video/home-theater/HT-E6500W/ZA-specs#
- http://support-us.samsung.com/spsn/search_result.jsp?keywords=allshare
- http://www.youtube.com/watch?v=lPLs4KvnyQ0
- http://www.youtube.com/watch?v=9EaYojtXFaU&noredirect=1
36. Defendants knew or should have known that its encouragement and instructions
to third parties would result in infringement of the ‘873 Patent by those third parties, including
end users in the Eastern District of Texas. Defendants are thus liable for inducing infringement
of the ‘873 Patent pursuant to 35 U.S.C. §271(b).
37. This infringement by Defendants of the ‘873 Patent has injured Black Hills and
will cause irreparable injury and damage in the future unless Defendants are enjoined from
infringing the ‘873 Patent.
38. On information and belief, Defendants post-knowledge infringement of the ‘873
Patent has been willful.
COUNT III
INFRINGEMENT OF THE ‘099 PATENT
39. Plaintiff incorporates by reference each of the preceding paragraphs as if set forth
fully herein.
40. Defendants are directly and/or indirectly infringing one or more of the claims of
the ‘099 Patent literally, or under the doctrine of equivalents, by importing into the United
States and/or making, using, selling, or offering for sale in the United States, including the
Eastern District of Texas, the Accused Products.
41. Exemplary infringing products for this patent include mobile phones, tablets,
televisions, Blu-Ray players, and home theater systems compatible with AllShare, DIAL, or
other media sharing protocols. For example, these products include the Galaxy S IV, Galaxy S
III, Galaxy Note II, Galaxy Tab 2 10.1, BD-F7500, BDF5900, BD-F5100, HT-E6730W/ZA,
HT-E6500W/ZA, LN55C750R2FXZA, UN55F8000BFXZA, UN55F6300AFXZA, and
PN60F8500AF and other products with similar functionality.
8
42. As a developer, designer, maker and distributor of these products, as well as a
holder of a significant patent portfolio in this field, Defendants knew or should have known that
their products infringed on one or more claims of the ‘099 Patent. Should Defendants contend
that they did not have prior notice of these patents, Defendants have notification of their
infringement of the ‘099 Patent by the filing and service of this complaint.
43. Defendants’ inducement of infringement of the ‘099 Patent includes, but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘099 Patent, including sharing media from a playlist across devices using
AllShare, DIAL, and/or other similar media sharing protocols. Defendants’ products are
imported, used, marketed, offered for sale and/or sold in the United States. Defendants
vigorously promote, market, advertise and ship the Accused Products along with on screen
display menus, directions, demonstrations, guides, manuals, training for use, user prompts,
product and user manuals and other materials that are specifically intended to direct, cause,
urge, encourage and facilitate others to perform acts of infringement of the ‘099 patent. These
actions by Defendants are intended specifically to cause users, including end users in the
Eastern District of Texas, to directly infringe the relevant claims.
44. Examples of instructions to cause infringement can be found at the following web
links and documents, which are on information and belief maintained by Defendant:
- http://www.samsung.com/us/video/blu-ray-dvd/BD-D5300/ZA-specs#
- http://www.samsung.com/us/video/blu-ray-dvd/BD-E6500/ZA-specs#
- http://www.samsung.com/us/news/newsRead.do?news_seq=20078\
- http://www.samsung.com/us/video/tvs/UN50ES6150FXZA-specs#\
- http://www.samsung.com/us/video/home-theater/HT-E6500W/ZA-specs#
- http://support-us.samsung.com/spsn/search_result.jsp?keywords=allshare
- http://www.youtube.com/watch?v=lPLs4KvnyQ0
- http://www.youtube.com/watch?v=9EaYojtXFaU&noredirect=1
45. Defendants knew or should have known that its encouragement and instructions
to third parties would result in infringement of the ‘099 Patent by these third parties, including
end users in the Eastern District of Texas. Defendants are thus liable for inducing infringement
of the ‘099 Patent pursuant to 35 U.S.C. §271(b).
9
46. This infringement by Defendants of the ‘099 Patent has injured Black Hills and
will cause irreparable injury and damage in the future unless Defendants are enjoined from
infringing the ‘099 Patent.
47. Black Hills reserves its rights to take discovery as to the extent of Defendants’
pre-suit knowledge of the ‘099 Patent and to allege pre-suit willfulness. Defendants’ continued
infringement of the ‘099 Patent is willful infringement.
COUNT IV
PATENT INFRINGEMENT OF THE ‘952 PATENT
48. Plaintiff incorporates by reference each of the preceding paragraphs as if set forth
fully herein.
49. Defendants are directly and/or indirectly infringing one or more of the claims of
the ‘952 Patent literally, or under the doctrine of equivalents, by importing into the United
States and/or making, using, selling, or offering for sale in the United States, including the
Eastern District of Texas, the Accused Products.
50. Exemplary infringing products for this patent include TV Model UN55F8000BF,
Blu-Ray Model BD-E6500, Home Theater model HT-F5500W, mobile phone models Galaxy S
III and IV, and tablet model Galaxy Tab 2 10.1 and other products with similar functionality.
51. The ‘952 Patent is a continuation of Published Application 2002-0002039. Prior
to this suit, the U.S.P.T.O. expressly put Defendants’ patent attorneys on notice of that
Application. On information and belief, Defendants also learned of the ‘952 Patent.
52. Also, as a developer, designer, maker and distributor of these products, as well as
a holder of a significant patent portfolio in this field, Defendants knew or should have known
that their products infringed on one or more claims of the ‘952 Patent. Should Defendants
contend that they did not have prior notice of these patents, Defendants have notification of
their infringement of the ‘952 Patent by the filing and service of this complaint.
53. Defendants’ inducement of infringement of the ‘952 Patent includes, but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘952 Patent, including utilizing an application such as Pandora to receive
song playlists. Defendants’ products are imported used, marketed, offered for sale and/or sold
in the United States. Defendants vigorously promote, market, advertise and ship the accused
10
products along with on screen display menus, directions, demonstrations, guides, manuals,
training for use, user prompts, product and user manuals and other materials that are specifically
intended to direct, cause, urge, encourage and facilitate others to perform acts of infringement of
the ‘952 patent. These actions by Defendants are intended specifically to cause users, including
end users in the Eastern District of Texas, to directly infringe the relevant claims.
54. Examples of such instructions can be found in the following links to the
Defendants’ website:
http://www.samsung.com/us/support/owners/product/HT-E3500/ZA (User Manual)
http://www.samsung.com/us/support/owners/product/BD-EM57C/ZA (User Manual)
http://www.samsung.com/us/video/blu-ray-dvd/BD-EM53C/ZA (Product Features)
http://www.samsung.com/us/appstore/app/000000021563 (Video Tutorial) http://www.samsung.com/us/article/7-ways-to-personalize-holiday-gifts (Tips
and Tricks) http://www.samsung.com/us/article/5-apps-to-help-you-through-the-holidays
(Article) 55. Defendants knew or should have known that its encouragement and instructions
to third parties would result in infringement of the ‘952 Patent by these third parties, including
end users in the Eastern District of Texas. Defendants are thus liable for inducing infringement
of the ‘952 Patent pursuant to 35 U.S.C. §271(b).
56. Upon information and belief Defendants also are contributory infringers, pursuant
to 35 U.S.C. 271(c), because of sales and offers to sell within the United States of articles
constituting or containing material parts of inventions claimed in at least one claim of the ‘952
Patent, when knowing and/or when willfully blind to the same being especially made and/or
adapted for use in an infringement of these patents, and not staples articles of commerce
suitable for substantial non-infringing uses. For example, at least one of the exemplary products
mentioned above constitutes or contains material parts of inventions claimed in at least one
claim of the ‘952 Patent that have no substantial non-infringing uses.
57. This infringement by Defendants of the ‘952 Patent has injured Black Hills and
will cause irreparable injury and damage in the future unless Defendants are enjoined from
infringing the ‘952 Patent.
58. On information and belief, Defendants post-knowledge infringement of the ‘952
Patent has been willful.
11
COUNT V
PATENT INFRINGEMENT OF THE ‘652 PATENT
59. Plaintiff incorporates by reference each of the preceding paragraphs as if set forth
fully herein.
60. Defendants are directly and/or indirectly infringing one or more of the claims of
the ‘652 Patent literally, or under the doctrine of equivalents, by importing into the United
States and/or making, using, selling, or offering for sale in the United States, including the
Eastern District of Texas, the Accused Products.
61. Exemplary infringing products for this patent include TV Model UN55F8000BF,
Blu-Ray Model BD-E6500, Home Theater model HT-F5500W, mobile phone models Galaxy S
III and IV, and tablet model Galaxy Tab 2 10.1 and other products with similar functionality.
62. The ‘652 Patent is a continuation of Published Application 2002-0002039. Prior
to this suit, the U.S.P.T.O. expressly put Defendants’ patent attorneys on notice of that
Application. On information and belief, Defendants also learned of the ‘652 Patent.
63. Also, as a developer, designer, maker and distributor of these products, as well as
a holder of a significant patent portfolio in this field, Defendants knew or should have known
that their products infringed on one or more claims of the ‘652 Patent. Should Defendants
contend that they did not have prior notice of these patents, Defendants have notification of
their infringement of the ‘652 Patent by the filing and service of this complaint.
64. Defendants’ inducement of infringement of the ‘652 Patent includes, but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘652 Patent, including utilizing applications such as Pandora to receive
song playlist and vTuner to receive Internet radio broadcasts. Defendants’ products are
imported, used, marketed, offered for sale and/or sold in the United States after importation.
Defendants vigorously promote, market, advertise and ship the Accused Products along with on
screen display menus, directions, demonstrations, guides, manuals, training for use, user
prompts, product and user manuals and other materials that are specifically intended to direct,
cause, urge, encourage and facilitate others to perform acts of infringement of the ‘652 patent.
These actions by Defendants are intended specifically to cause users, including end users in the
Eastern District of Texas, to directly infringe the relevant claims.
12
65. Examples of such instructions can be found in the following links to the
Defendants’ website:
http://www.samsung.com/us/support/owners/product/HT-E3500/ZA (User Manual)
http://www.samsung.com/us/support/owners/product/BD-EM57C/ZA (User Manual)
http://www.samsung.com/us/video/blu-ray-dvd/BD-EM53C/ZA (Product Features)
http://www.samsung.com/us/appstore/app/000000021563 (Video Tutorial) http://www.samsung.com/us/article/7-ways-to-personalize-holiday-gifts (Tips
and Tricks) http://www.samsung.com/us/article/5-apps-to-help-you-through-the-holidays
(Article) http://www.samsung.com/us/appstore/app.do?appId=G00000471367 (App
Store) http://www.samsung.com/us/appstore/app.do?appId=G00000471367 (User
Manual) http://support-us.samsung.com/spsn/search_result.jsp?keywords=vtuner (Video
Tutorial) http://www.samsung.com/global/article/articleDetailView.do?atcl_id=19 (App
Profile)
66. Defendants knew or should have known that its encouragement and instructions
to third parties would result in infringement of the ‘652 Patent by these third parties, including
end users in the Eastern District of Texas. Defendants are thus liable for inducing infringement
of the ‘652 Patent pursuant to 35 U.S.C. §271(b).
67. Upon information and belief Defendants also are contributory infringers, pursuant
to 35 U.S.C. 271(c), because of sales and offers to sell within the United States of articles
constituting or containing material parts of inventions claimed in at least one claim of the ‘652
Patent, when knowing and/or when willfully blind to the same being especially made and/or
adapted for use in an infringement of these patents, and not staples articles of commerce
suitable for substantial non-infringing uses. For example, at least one of the exemplary products
mentioned above constitutes or contains material parts of inventions claimed in at least one
claim of the ‘652 Patent that have no substantial non-infringing uses.
68. This infringement by Defendants of the ‘652 Patent has injured Black Hills and
will cause irreparable injury and damage in the future unless Defendants are enjoined from
infringing the ‘652 Patent.
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69. On information and belief, Defendants post-knowledge infringement of the ‘652
Patent has been willful.
COUNT VI
PATENT INFRINGEMENT OF THE ‘689 PATENT
70. Plaintiff incorporates by reference each of the preceding paragraphs as if set forth
fully herein.
71. Defendants are directly and/or indirectly infringing one or more of the claims of
the ‘689 Patent literally, or under the doctrine of equivalents, by importing into the United
States and/or making, using, selling, or offering for sale in the United States, including the
Eastern District of Texas, the Accused Products.
72. Exemplary accused products for this patent include mobile devices and tablets
with Group Cast or Group Play, including the Galaxy S III, Galaxy S IV, and Tab 2 and other
products with similar functionality.
73. On information and belief, in 2002, after the filing of the provisional patent
applications from which the Goldberg ‘689 Patent claim priority, Dr. Goldberg corresponded
with and met in person with senior employees, including Dr. Sang-Li Park, Woonki Kim, and
Mr. Chang-Gun Kim, at the office of Samsung Electronics Co. Ltd. in Seoul, Korea concerning
his technology and intellectual property. On information and belief, Mr. C.G. Kim reported to
Dr. Chin via Mr. Sang-il Park at that time.
74. For example, Dr. Goldberg, in September 2002, met with executives in the
Business Development, Technical and Marketing Department. Dr. Goldberg made a
presentation, with specific reference to intellectual property and patent rights, to these
executives. His presentation specifically discussed the ability to share music across multiple
devices. At least as a result of such exposure, Defendants have been on notice of Dr.
Goldberg’s patent rights for many years prior to the filing of this lawsuit. On information and
belief, Defendants have had specific and actual knowledge of Dr. Goldberg’s ‘689 patent.
75. Also, as a developer, designer, maker and distributor of these products, as well as
a holder of a significant patent portfolio in this field, Defendants knew or should have known
that their products infringed on one or more claims of the ‘689 Patent. Should Defendants
14
contend that they did not have prior notice of these patents, Defendants have notification of
their infringement of the ‘689 Patent by the filing and service of this complaint.
76. Defendants’ inducement of infringement of the ‘689 Patent includes, but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘689 Patent. Defendants’ products are imported, used, marketed, offered
for sale and/or sold in the United States after importation. Defendants vigorously promote,
market, advertise and ship the Accused Products along with on screen display menus,
directions, demonstrations, guides, manuals, training for use, user prompts, product and user
manuals and other materials that are specifically intended to direct, cause, urge, encourage and
facilitate others to perform acts of infringement of the ‘689 patent. These actions by Defendants
are intended specifically to cause users, including ender users in the Eastern District of Texas, to
directly infringe the relevant claims.
77. Defendants’ inducement of infringement of the ‘689 Patent includes but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘689 patent. Defendant ships the Accused Products with the accused
Group Cast/ Group Play functionality pre-loaded which encourages third parties to utilize the
Accused Products in an infringing manner, and provides detailed instructions to these third
parties which causes such infringement.
78. Examples of such instructions can be found in the following links to, on
information and belief, the Defendants’ web site:
http://downloadcenter.samsung.com/content/UM/201207/20120706131108550/VZW_SCH-i535_English_User_Manual_LG1_F5.pdf (Galaxy S3 User Manual (see page 72), encouraging use of Group Cast)
http://www.samsung.com/us/support/supportOwnersHowToGuidePopup.do?howto_guide_seq=6
943&prd_ia_cd=N0000004&map_seq=47750 (Group Play How-To Guide)
79. Defendants knew or should have known that its encouragement and instructions
to third parties would result in infringement of the ‘689 Patent by these third parties, including
end users in the Eastern District of Texas. Defendants are thus liable for inducing infringement
of the ‘689 Patent pursuant to 35 U.S.C. §271(b).
80. Upon information and belief Defendants also are contributory infringers, pursuant
to 35 U.S.C. 271(c), because of sales and offers to sell within the United States of articles
constituting or containing material parts of inventions claimed in at least one claim of the ‘689
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Patent, when knowing and/or when willfully blind to the same being especially made and/or
adapted for use in an infringement of these patents, and not staples articles of commerce
suitable for substantial non-infringing uses. For example, at least one of the exemplary products
mentioned above constitutes or contains material parts of inventions claimed in at least one
claim of the ‘689 Patent that have no substantial non-infringing uses.
81. This infringement by Defendants of the ‘689 Patent has injured Black Hills and
will cause irreparable injury and damage in the future unless Defendants are enjoined from
infringing the ‘689 Patent.
82. Defendants infringement of the ‘689 Patent has been willful.
COUNT VII
PATENT INFRINGEMENT OF THE ‘082 PATENT
83. Plaintiff incorporates by reference each of the preceding paragraphs as if set forth
fully herein.
84. Defendants are directly and/or indirectly infringing one or more of the claims of
the ‘082 Patent literally, or under the doctrine of equivalents, by importing into the United
States and/or making, using, selling, or offering for sale in the United States, including the
Eastern District of Texas, the Accused Products.
85. Exemplary accused products for this patent include mobile devices and tablets
with Wi-Fi Direct and/or Share Shot functionality, including the Galaxy S III, Galaxy S IV and
Tab 2 and other products with similar functionality.
86. On information and belief, in 2002, after the filing of the provisional patent
applications from which the Goldberg ‘082 Patent claim priority, Dr. Goldberg corresponded
with and met in person with senior employees, including Dr. Sang-Li Park, Woonki Kim, and
Mr. Chang-Gun Kim, at the office of Samsung Electronics Co. Ltd. in Seoul, Korea concerning
his technology and intellectual property. On information and belief, Mr. C.G. Kim reported to
Dr. Chin via Mr. Sang-il Park at that time.
87. For example, Dr. Goldberg, in September 2002, met with executives in the
Business Development, Technical and Marketing Department. Dr. Goldberg made a
presentation, with specific reference to intellectual property and patent rights, to these
executives. His presentation specifically discussed the ability to share music across multiple
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devices. At least as a result of such exposure, Defendants have been on notice of Dr.
Goldberg’s patent rights for many years prior to the filing of this lawsuit. On information and
belief, Samsung has had specific and actual knowledge of Dr. Goldberg’s ‘082 patent.
88. Also, as a developer, designer, maker and distributor of these products, as well as
a holder of a significant patent portfolio in this field, Defendants knew or should have known
that their products infringed on one or more claims of the ‘082 Patent. Should Defendants
contend that they did not have prior notice of these patents, Defendants have notification of
their infringement of the ‘082 Patent by the filing and service of this complaint.
89. Defendants’ inducement of infringement of the ‘082 Patent includes, but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘082 Patent. Defendants’ products are imported, used, marketed, offered
for sale and/or sold in the United States after importation. Defendants vigorously promote,
market, advertise and ship the Accused Products along with on screen display menus,
directions, demonstrations, guides, manuals, training for use, user prompts, product and user
manuals and other materials that are specifically intended to direct, cause, urge, encourage and
facilitate others to perform acts of infringement of the ‘082 patent. These actions by Defendants
are intended specifically to cause users, including end users in the Eastern District of Texas, to
directly infringe the relevant claims.
90. Defendants’ inducement of infringement of the ‘082 Patent includes but is not
limited to, actively encouraging and instructing third parties to use Defendant’s products in
ways that infringe the ‘082 patent. Defendant ships the Accused Products with the accused Wi-
Fi Direct and/or Share Shot functionality pre-loaded which encourages third parties to utilize the
Accused Products in an infringing manner, and provides detailed instructions to these third
parties which causes such infringement.
91. Examples of such instructions can be found in the following links to, on
information and belief, the Defendants’ web site:
http://downloadcenter.samsung.com/content/UM/201207/20120706131108550/VZW_SCH-i535_English_User_Manual_LG1_F5.pdf (Galaxy S3 User Manual (see page 100), encouraging use of Wi-Fi Direct)
http://www.samsung.com/us/support/supportOwnersHowToGuidePopup.do?howto_guide_seq=5620&prd_ia_cd=N0000003&map_seq=34084 (Wi-Fi Direct How-To Guide).
17
92. Defendants knew or should have known that its encouragement and instructions
to third parties would result in infringement of the ‘082 Patent by these third parties, including
end users in the Eastern District of Texas. Defendants are thus liable for inducing infringement
of the ‘082 Patent pursuant to 35 U.S.C. §271(b).
93. Upon information and belief Defendants also are contributory infringers, pursuant
to 35 U.S.C. 271(c), because of sales and offers to sell within the United States of articles
constituting or containing material parts of inventions claimed in at least one claim of the ‘082
Patent, when knowing and/or when willfully blind to the same being especially made and/or
adapted for use in an infringement of these patents, and not staples articles of commerce
suitable for substantial non-infringing uses. For example, at least one of the exemplary products
mentioned above constitutes or contains material parts of inventions claimed in at least one
claim of the ‘082 Patent that have no substantial non-infringing uses.
94. This infringement by Defendants of the ‘082 Patent has injured Black Hills and
will cause irreparable injury and damage in the future unless Defendants are enjoined from
infringing the ‘082 Patent.
95. Defendants infringement of the ‘082 Patent has been willful.
COUNT VIII
PATENT INFRINGEMENT OF THE ‘593 PATENT
96. Plaintiff incorporates by reference each of the preceding paragraphs as if set forth
fully herein.
97. Defendants are directly and/or indirectly infringing one or more of the claims of
the ‘593 Patent literally, or under the doctrine of equivalents, by importing into the United
States and/or making, using, selling, or offering for sale in the United States, including the
Eastern District of Texas, the Accused Products.
98. Exemplary accused products include mobile smartphones and tablets with mobile
data communication capability and GPS functionality with Google Latitude (either as a stand-
alone application or as part of Google Maps). For example, these products include: Galaxy S
IV, Galaxy Note II, Galaxy S III, Galaxy Express, Galaxy Stratosphere II (4G), Galaxy Rugby
Pro, Galaxy Note, Galaxy Nexus, Galaxy Stellar, Galaxy S Blaze 4G, Stratosphere, Galaxy Tab
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2, Focus, Focus 2, Captivate Glide, Galaxy Exhilarate and other products with similar
functionality.
99. As a developer, designer, maker and distributor of these products, as well as a
holder of a significant patent portfolio in this field, Defendants knew or should have known that
their products infringed on one or more claims of the ‘593 Patent. Should Defendants contend
that they did not have prior notice of these patents, Defendants have notification of their
infringement of the ‘593 Patent by the filing and service of this complaint.
100. Defendants’ inducement of infringement of the ‘593 Patent includes, but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘593 Patent. Defendants’ products are imported, used, marketed, offered
for sale and/or sold in the United States after importation. Defendants vigorously promote,
market, advertise and ship the Accused Products along with on screen display menus,
directions, demonstrations, guides, manuals, training for use, user prompts, product and user
manuals and other materials that are specifically intended to direct, cause, urge, encourage and
facilitate others to perform acts of infringement of the ‘593 patent. These actions by Defendants
are intended specifically to cause users, including ender users in the Eastern District of Texas,
directly to infringe the relevant claims.
101. Defendants’ inducement of infringement of the ‘593 patent includes but is not
limited to, providing Accused Products preinstalled with Google Latitude (within Google Maps
or as a separate stand-alone application). The inclusion of Latitude on the Accused Products
actively encourages the end customer to utilize and execute this application in an infringing
system. Defendants’ user manuals also contain instructions encouraging infringement as
exemplified below.
102. Examples of instructions to cause infringement can be found at the following web
links and documents, which are on information and belief maintained by Defendant:
‐ http://www.samsung.com/us/support/SupportOwnersFAQPopup.do?faq_id=FAQ00045618&fm_seq=46280 (FAQ on enabling location services)
‐ https://www.samsung.com/us/mobile/cell-phones (link enabling selection of phones by carrier (including AT&T) and featuring “In the Spotlight” an accused Galaxy S4 by AT&T.
‐ http://downloadcenter.samsung.com/content/UM/201207/20120706131108550/VZW_SCH-i535_English_User_Manual_LG1_F5.pdf (Galaxy S3 User Manual (see page 86), encouraging use of Latitude: “Use Google Latitude to locate your friends on a map, and share or hide your location.”)
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103. Defendants knew or should have known that its encouragement and instructions
to third parties would result in infringement of the ‘593 Patent by these end users, including end
users in the Eastern District of Texas. Defendants are thus liable for inducing infringement of
the ‘593 Patent pursuant to 35 U.S.C. §271(b).
104. Upon information and belief Defendants also are contributory infringers, pursuant
to 35 U.S.C. 271(c), because of sales and offers to sell within the United States of articles
constituting or containing material parts of inventions claimed in at least one claim of the ‘593
Patent, when knowing and/or when willfully blind to the same being especially made and/or
adapted for use in an infringement of these patents, and not staples articles of commerce
suitable for substantial non-infringing uses. For example, at least one of the exemplary products
mentioned above constitutes or contains material parts of inventions claimed in at least one
claim of the ‘593 Patent that have no substantial non-infringing uses.
105. This infringement by Defendants of the ‘593 Patent has injured Black Hills and
will cause irreparable injury and damage in the future unless Defendants are enjoined from
infringing the ‘593 Patent.
106. Black Hills reserves its rights to take discovery as to the extent of Defendants’
pre-suit knowledge of the ‘593 Patent and to allege pre-suit willfulness. Defendants’ continued
infringement of the ‘593 Patent is willful infringement.
COUNT IX
PATENT INFRINGEMENT OF THE ‘686 PATENT
107. Plaintiff incorporates by reference each of the preceding paragraphs as if set forth
fully herein.
108. Defendants are directly and/or indirectly infringing one or more of the claims of
the ‘686 Patent literally, or under the doctrine of equivalents, by importing into the United
States and/or making, using, selling, or offering for sale in the United States, including the
Eastern District of Texas, the Accused Products.
109. Exemplary infringing products for this patent include TV Model UN55F8000BF,
Blu-Ray Model BD-E6500, Home Theater model HT-F5500W, mobile phone models Galaxy S
III and IV, and tablet model Galaxy Tab 2 10.1 and other products with similar functionality.
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110. As a developer, designer, maker and distributor of these products, as well as a
holder of a significant patent portfolio in this field, Defendants knew or should have known that
their products infringed on one or more claims of the ‘686 Patent. Should Defendants contend
that they did not have prior notice of these patents, Defendants have notification of their
infringement of the ‘686 Patent by the filing and service of this complaint.
111. Defendants’ inducement of infringement of the ‘686 Patent includes, but is not
limited to, actively encouraging and instructing third parties to use Defendants’ products in
ways that infringe the ‘686 Patent, including utilizing an application such as Pandora to provide
local users with information stored remotely on a network. Defendants’ products are imported,
used, marketed, offered for sale and/or sold in the United States. Defendants vigorously
promote, market, advertise and ship the Accused Products along with on screen display menus,
directions, demonstrations, guides, manuals, training for use, user prompts, product and user
manuals and other materials that are specifically intended to direct, cause, urge, encourage and
facilitate others to perform acts of infringement of the ‘686 patent. These actions by Defendants
are intended specifically to cause users, including end users in the Eastern District of Texas, to
directly infringe the relevant claims.
112. Examples of such instructions can be found in the following links to the
Defendants’ website:
http://www.samsung.com/us/support/owners/product/HT-E3500/ZA (User Manual)
http://www.samsung.com/us/support/owners/product/BD-EM57C/ZA (User Manual)
http://www.samsung.com/us/video/blu-ray-dvd/BD-EM53C/ZA (Product Features)
http://www.samsung.com/us/appstore/app/000000021563 (Video Tutorial) http://www.samsung.com/us/article/7-ways-to-personalize-holiday-gifts (Tips
and Tricks) http://www.samsung.com/us/article/5-apps-to-help-you-through-the-holidays
(Article) 113. Defendants knew or should have known that its encouragement and instructions
to third parties would result in infringement of the ‘686 Patent by these third parties, including
end users in the Eastern District of Texas. Defendants are thus liable for inducing infringement
of the ‘686 Patent pursuant to 35 U.S.C. §271(b).
114. Upon information and belief Defendants also are contributory infringers, pursuant
to 35 U.S.C. 271(c), because of sales and offers to sell within the United States of articles
21
constituting or containing material parts of inventions claimed in at least one claim of the ‘686
Patent, when knowing and/or when willfully blind to the same being especially made and/or
adapted for use in an infringement of these patents, and not staples articles of commerce
suitable for substantial non-infringing uses. For example, at least one of the exemplary products
mentioned above constitutes or contains material parts of inventions claimed in at least one
claim of the ‘686 Patent that have no substantial non-infringing uses.
115. This infringement by Defendants of the ‘686 Patent has injured Black Hills and
will cause irreparable injury and damage in the future unless Defendants are enjoined from
infringing the ‘686 Patent.
116. Black Hills reserves its rights to take discovery as to the extent of Defendants’
pre-suit knowledge of the ‘686 Patent and to allege pre-suit willfulness. Defendants’ continued
infringement of the ‘686 Patent is willful infringement.
REQUESTS FOR RELIEF
WHEREFORE, Black Hills respectfully requests that judgment be entered in its favor
and against Defendants as follows:
a. That Defendants have directly and/or indirectly infringed the '323, ‘873, '099,
'952, ‘652, ‘689, ‘082, '593, and ‘686 Patents, literally and/or under the doctrine of equivalents;
b. That Defendants and their respective agents, servants, officers, directors,
employees, and all persons acting in concert with them, directly or indirectly, be temporarily and
permanently enjoined from infringement of the '323, ‘873, '099, '952, ‘652, ‘689, ‘082, '593, and
‘686 Patents;
c. That Defendants be ordered to account for and pay to Black Hills the damages to
which Black Hills is entitled as a result of the infringement of the '323, ‘873, '099, '952, ‘652,
‘689, ‘082, '593, and ‘686 Patents, together with interest and costs;
d. That a post-judgment equitable accounting of damages be ordered for the period
of infringement of the '323, ‘873, '099, '952, ‘652, ‘689, ‘082, '593, and ‘686 Patents.
e. That Black Hills be awarded all other damages permitted by 35 U.S.C. §284,
including increased damages up to three times the amount of compensatory damages found;
f. That the case be deemed exceptional under 35 U.S.C. § 285 and that Black Hills
be awarded its costs and attorneys’ fees; and
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g. That Black Hills be awarded any other and further relief as this Court may deem
is just and equitable.
DEMAND FOR TRIAL BY JURY
Black Hills respectfully demands a trial by jury pursuant to Rule 38 of the Federal Rules
of Civil Procedure on any and all issues so triable.
Dated: May 6, 2013 Respectfully submitted,
/s/ Claire A. Henry Claire Abernathy Henry
State Bar No. 24053063 T. John Ward, Jr. Texas State Bar No. 00794818 J. Wesley Hill Texas State Bar No. 24032294 WARD & SMITH LAW FIRM P.O. Box 1231 1127 Judson Road, Ste. 220 Longview, Texas 75606-1231 (903) 757-6400 (903) 757-2323 (fax) [email protected] [email protected] [email protected] H. Joseph Hameline MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C. One Financial Center Boston, MA 02111 Tel: 617-542-6000 Fax: 617-542-2241 [email protected] Howard Wisnia James Conley John Giust Arun Goel MINTZ, LEVIN, COHN, FERRIS,
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GLOVSKY AND POPEO, P.C. 3580 Carmel Mountain Road, Suite 300 San Diego, CA 92130 Tel: 858-314-1500 Fax: 858-314-1501 [email protected] [email protected] [email protected] [email protected] Peter Snell MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C. Chrysler Center 666 Third Avenue New York, NY 10017 Tel: 212.935.3000 Fax: 212.983.3115 [email protected]
ATTORNEYS FOR PLAINTIFF BLACK HILLS MEDIA, LLC